Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Response to Amendment
Status of the Claims
Receipt of Applicant’s response, filed 21 Apr 2026 has been entered.
Claims 1, 5, 7, 8, 11-13, 17, 18, 22, 24-26, 30, 32, 33, 36-38, 42, 43, 47-53 and 55-73 remain pending in the application.
Claims 1, 5, 11, 13, 26, 30, 36, 38, and 71 are amended.
Claim 2-4, 6, 9, 10, 14-16, 19-21, 23, 27-29, 31, 34, 35, 39-41, 44-46, 54 are cancelled.
Claims 7, 8, 11-13, 26, 30, 32, 33, 36-38, 42, 43, 47-53, 55-72 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention. Claims 7, 8, 11-13 and 63-72 are withdrawn as they require component (b) as a compound other than the elected pinoxaden.
Claims 1, 5, 17, 18, 22, 24, 25 and 73 are under consideration to the extent of the elected species, i.e., that the ACCase inhibitor is pinoxaden.
Rejections Maintained
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The rejection below is reapplied as previously presented and updated to better address the amendment to the ratio in claim 1.
Claims 1, 5, 17, 18, 22, 24, 25 and 73 are rejected under 35 U.S.C. 103 as being unpatentable over Eckelbarger et al. (US2014/0274695, published 18 September 2014) as evidenced by NIH (Pesticides) in view of Satchivi et al. (US 2009/0062121, published 05 Mar 2009).
Eckelbarger teaches herbicidal compounds of Formula (I):
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(abstract, [0004], [0015]). Eckelbarger teaches values for the R1, R2, R3, R4, A and X variables that render obvious the compounds recited in the instant claims (see [0005]-[0015]). For instance, Eckelbarger teaches that A may be
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([0172]), X may be CF ([0171]), R3 and R4 may be Hydrogen and R2 may be chlorine ([0169]). This combination provides the structure of
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. Eckelbarger teaches that the R1 group may be OR1’ where OR1’ may be hydrogen, C1-C8 alkyl or C7-C10 arylalkyl ([0006]), matching the requirements presented in claim 1. The C7 arylalkyl group renders obvious the benzyl group and thus the structure of instant claim 73. Eckelbarger exemplifies the compound
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([0317]) which is identical to the compound recited in instant claims 1 and 5. Eckelbarger teaches that the compounds of Formula (I) may be used as herbicides to control undesirable vegetation (abstract, [0015]). Regarding the acetyl CoA carboxylase (component b of the composition) of claims 1, 17 and 18, Eckelbarger teaches that the compositions may be used in conjunction with one or more other herbicides such as pinoxaden (the elected species) ([0201]). Eckelbarger teaches a list of other herbicides that can be used with the composition ([0201]). As evidenced by NIH, herbicides are a type of pesticide (page 1). Thus, the teachings of Eckelbarger of one or more other herbicides renders obvious an additional pesticide. Regarding claim 24 which requires components (a) and (b) as the only active ingredients in the composition, this limitation would be obvious as Eckelbarger teaches compositions of formula (I) and that it may be used in combination with one other herbicide, as described above. Eckelbarger does not require additional actives to be used and it would have been obvious to one of ordinary skill to limit the active components in the composition to only what is necessary for the desired treatment. Regarding claim 22, Eckelbarger teaches that the compounds may be used in mixtures containing an herbicidally effective amount of the compound along with at least one agriculturally acceptable adjuvant or carrier ([0185]). Regarding claim 25, Eckelbarger teaches that the compositions may be concentrates or formulations that are diluted with additional carriers and adjuvants before application ([0185]).
Eckelbarger teaches that pre-emergent and post-emergent application rates of the composition range from 1 to about 4000 g/ha ([0200]). Eckelbarger further exemplifies application of various compounds of Formula (I) applied at various rates such as 35, 70 and 140 g/ha with result performance varying based on the specific compound applied and the species being treated (page 68 Table 15).
Eckelbarger does not teach the weight ratios of a compound of Formula (I) and pinoxaden as recited in instant claim 1. This deficiency is made up for in the teachings of Satchivi.
Satchivi teaches an herbicidal mixture comprising a first pyridine or pyrimidine carboxylic acid herbicide and a second herbicide which may be pinoxaden ([0006]). Satchivi exemplifies use of pinoxaden for controlling weeds in cereal crops by application at rates such as 7.5 and 15 g/ha (page 9 Table 3).
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have formed an herbicidal composition comprising a compound of Formula (I) and one or more other herbicides such as pinoxaden, as is taught by Eckelbarger, and to have applied the compound of Formula (I) at a rate ranging from 1 to 4000 g/ha and the compound pinoxaden at rates such as 7.5 and 15 g/ha. Compounds of Formula (I) are known for use at rates of 1 to 4000 g/ha and the rate may be adjusted based on the specific compound applied and the specific species that is being treated, as taught by Eckelbarger. Similarly, pinoxaden is known to be useful at application rates such as 7.5 and 15 g/ha. An application rate of 1 to 4000 g/ha of a compound of Formula (I) and a rate of 15 g/ha pinoxaden results in a weight ratio of the compound to pinoxaden of 1:15 to 267:1, which renders obvious the rate of the instant claims. It would be obvious to form an herbicidal mixture of a compound of Formula (I) and pinoxaden as described above and it would be further obvious to have them at a ratio such as 1:15 to 267:1 as this ratio represents a ratio of the application rates in g/ha of the individual components that are known to be suitable for treatment of various crop and weed species.
In addition to the obviousness of the recited weight ratios as described above, it is further recognized that the weight ratios are obvious as a matter of routine experimentation. As described above, the compounds of formula (I), as taught by Eckelbarger, may be applied at various application rates depending on the compound applied and the weed that is to be treated. Additionally, pinoxaden may be applied to various weed species at different rates with variable effectiveness. Thus, the amount of a compound of Formula (I) and the amount of pinoxaden that is applied to a weed species is an art-recognized result effective variable such that determining that the ratio of a compound of Formula (I) and pinoxaden would be about 1:60 to about 1:3 would be a matter of optimization through routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It would be obvious to one of ordinary skill to determine the most suitable application rate for the different components of a mixture of a compound of Formula (I) and pinoxaden depending on the specific compound of Formula (I) that is utilized and based on the weed species to be treated as the effectiveness of the treatment is dependent on these parameters as demonstrated by Eckelbarger and Satchivi.
Response to Arguments
Applicant's arguments filed 21 Apr 2026 have been fully considered but they are not persuasive. Applicant states that the weight ratio range has been within the examples of the present invention and points to the specification and tables 1 and 8 for a ratio of 1:6 and table 3 for a ratio of 1:56 and to the declaration of 21 Apr 2026 for ranges of 1:3 or 1:6 (page 11 of remarks). Applicant argues that the combination of herbicide (a) and herbidcide (b) significantly improved herbicidal efficacies as compared to the expected additive effects of the corresponding control compositions (page 11 of remarks). Applicant points to instances of specific compounds of (a) and (b) combined which have a greater effect than the components alone (page 12 of remarks). Applicant provided further data in a declaration from 21 Apr 2026 with data for the benzyl ester and methyl ester of compound 1 (page 3 of declaration). Applicant argues that the claimed compositions comprising the combination of (a) and (b) within the claimed weight ratios unexpetecdly achieved greater herbicidal efficacy (page 13 of remarks). Applicant argues that the experimental data is commensurate in scope with the claims (page 13 of remarks).
The examiner is not persuaded by these arguments as the results presented are not commensurate in scope with the claims and the applicant has not presented data in such a way to truly establish why the results should be understood as unexpected. The examiner notes that the values for the ratios in the presented data are not commensurate with what is claimed as the claimed range goes up to 1:60 instead of 1:56. On a more specific individual level, although the applicant has reduced the scope of herbicide (a) by removing compounds, the claims are still broad in relation to the data shown, especially in respect to the herbicide (b) and the ratios. The data in the tables of the specification show results from testing compound 1 with a selection of carboxylase inhibitors and the declaration shows two additional compounds tested with pinoxaden. The data show that specific combinations performed better than expected, the same as expected, and worse than expected, indicating variability in the results. Further, it appears that the most a specific combination of components was tested was up to two ratio values. For example, Tables A and B of the declaration shown the benzyl ester and methyl ester compounds tested with pinoxaden at 1:6 and 1:3 ratios. Similar data is shown in Tables 1-11 of the specification. This is insufficient to establish unexpected results across the claimed range of 1:60 to 1:3 for each of the many possible combinations as claimed. For instance, there is nothing to indicate that the combination of the herbicide (a) with pinoxaden would demonstrate unexpected results up to a ratio of 1:60. The applicant essentially makes this argument with these remarks on page 13:
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As noted by the applicant, there is an expectation that the unexpected results purported to be present in the combination would not be observed across all ratios. The question remains, as it has not been demonstrated, where is that ratio limit for the specific combinations? Ratios of 1:3 and 1:6 have been tested for pinoxaden but nothing has been shown to demonstrate any level of unexpected results for ratios extending up to 1:60. And if unexpected results are shown for ratios up to 1:60, is there a ratio where unexpected results are not demonstrated? Or is it rather a matter of routine experimentation for one of ordinary skill to test combinations of (a) and (b), as is obvious from the art, against various weeds in order to see what combination and ratio is most effective for the particular weed? Thus, the examiner is not persuaded that the results presented are sufficient to establish unexpected results across the claims and overcome the case of obviousness present in the prior art.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 5, 17, 18, 22, 24, 25 and 73 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of U.S. Patent No. 9,637,505 in view of Eckelbarger et al. (US2014/0274695, published 18 September 2014) as evidenced by NIH (Pesticides) in view of Satchivi et al. (US 2009/0062121, published 05 Mar 2009).
The ‘505 patent claims in claims 1-25 a compound of Formula (I)
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and the variable groups as claimed read on the functional groups of the compounds in the instant claims.
Claim 26 of the ‘505 patent recites the compound of Formula (I) as part of an herbicidal composition comprising an agriculturally acceptable adjuvant or carrier. Claim 27 recites an additional herbicidal compound. Claims 28 and 29 recite a safener in the composition.
The ‘505 patent does not recite the addition of an ACCase inhibitor such as pinoxaden and the weight ratios as recited or that the composition is an herbicidal concentrate (claim 25). These deficiencies are made up for in the teachings of Eckelbarger and Satchivi.
The teachings of Eckelbarger and Satchivi are described supra.
Based on the teachings of Eckelbarger and Satchivi, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included pinoxaden in the herbicidal composition of the claims of the ‘505 patent and to have formed the composition as an herbicidal concentrate. The same compound of Formula (I) of the ‘505 patent is known for use in herbicidal compositions in combination with other herbicides such as pinoxaden, as taught by Eckelbarger. Regarding instant claim 24, the combination of the ‘505 patent and Eckelbarger do not require active ingredients in addition to a compound of Formula (I) and pinoxaden. It is known that such compositions may be formed as concentrates, as taught by Eckelbarger. Thus, one of ordinary skill would have a reasonable expectation of success in forming the composition as the same compounds are taught as suitable in herbicidal compositions by Eckelbarger. Regarding the ratio of the components, the application rates of the compounds of Formula (I) of Eckelbarger and the application rate of pinoxaden as taught by Satchivi render obvious the ratios of the instant claims. For instance, application of compounds of Formula (I) at 35 g/ha are known, as taught by Eckelbarger. Similarly, pinoxaden is known to be useful at application rates such as 7.5 and 15 g/ha. An application rate of 35 g/ha of a compound of Formula (I) and a rate of 7.5 g/ha pinoxaden results in a weight ratio of 35:7.5 (4.7:1). Alternatively, it would be a matter of optimization through routine experimentation to determine the suitable ratio of the components as the compounds of formula (I), as taught by Eckelbarger, may be applied at various application rates depending on the compound applied and the weed that is to be treated and pinoxaden may also be applied to various weed species at different rates with variable effectiveness, as taught by Satchivi, thus indicating that the amount of each substance that is applied is a result effective variable which one of ordinary skill would recognize and could optimize.
Claims 1, 5, 17, 18, 22, 24, 25 and 73 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 9,763,445 in view of Eckelbarger et al. (US2014/0274695, published 18 September 2014) as evidenced by NIH (Pesticides) in view of Satchivi et al. (US 2009/0062121, published 05 Mar 2009).
The ‘445 patent claims a safened herbicidal composition comprising a pyridine carboxylic acid herbicide of Formula (III)
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and a quinolinyloxyacetate safener. Claim recites
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which is identical to compounds of instant claims 1, 5, 6 and 73. Claims 4-7 recite specific safeners and ratios of the compound of Formula (III) and the safener. Claim 7 recites an additional adjuvant. Claim 8 recites an additional pesticide.
The ‘445 patent does not recite the addition of an ACCase inhibitor such as pinoxaden in the and the weight ratios as recited or that the composition is an herbicidal concentrate (claim 25). These deficiencies are made up for in the teachings of Eckelbarger and Satchivi.
The teachings of Eckelbarger and Satchivi are described supra.
Based on the teachings of Eckelbarger and Satchivi, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included pinoxaden in the herbicidal composition of the claims of the ‘445 patent and to have formed the composition as an herbicidal concentrate. The same pyridine carboxylic acid herbicide compound of the ‘445 patent is known for use in herbicidal compositions in combination with other herbicides such as pinoxaden, as taught by Eckelbarger. Regarding instant claim 24, the combination of the ‘445 patent and Eckelbarger does not require active ingredients in addition to the pyridine carboxylic acid herbicide and pinoxaden. It is known that such compositions may be formed as concentrates, as taught by Eckelbarger. Thus, one of ordinary skill would have a reasonable expectation of success in forming the composition as the same compounds are taught as suitable in herbicidal compositions by Eckelbarger. Regarding the ratio of the components, the application rates of the compounds of Formula (I) of Eckelbarger and the application rate of pinoxaden as taught by Satchivi render obvious the ratios of the instant claims. For instance, application of compounds of Formula (I) at 35 g/ha are known, as taught by Eckelbarger. Similarly, pinoxaden is known to be useful at application rates such as 7.5 and 15 g/ha. An application rate of 35 g/ha of a compound of Formula (I) and a rate of 7.5 g/ha pinoxaden results in a weight ratio of 35:7.5 (4.7:1), which renders obvious the ratio of instant claims. Alternatively, it would be a matter of optimization through routine experimentation to determine the suitable ratio of the components as the compounds of formula (I), as taught by Eckelbarger, may be applied at various application rates depending on the compound applied and the weed that is to be treated and pinoxaden may also be applied to various weed species at different rates with variable effectiveness, as taught by Satchivi, thus indicating that the amount of each substance that is applied is a result effective variable which one of ordinary skill would recognize and could optimize.
Claims 1, 5, 17, 18, 22, 24, 25 and 73 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 10,455,836 in view of Eckelbarger et al. (US2014/0274695, published 18 September 2014) as evidenced by NIH (Pesticides) in view of Satchivi et al. (US 2009/0062121, published 05 Mar 2009).
The ‘836 patent claims a herbicidal composition comprising a pyridine carboxylic acid herbicide of
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and a photosystem II inhibitor. The pyridine carboxyl acid compounds of claims 1-3 and 11-13 render obvious the pyridine carboxylic acid compound of the instant claims. Claims 4-6 require the photosystem II inhibitor is bromoxynil, isoproturon or metribuzin. Claim 7 recites an additional adjuvant. Claim 9 requires the pyridine carboxylic acid the photosystem II inhibitor as the only active. Claim 10 recites the composition as an herbicidal concentrate.
The ‘836 patent does not recite the addition of an ACCase inhibitor such as pinoxaden in the and the weight ratios as recited. These deficiencies are made up for in the teachings of Eckelbarger and Satchivi.
The teachings of Eckelbarger and Satchivi are described supra.
In addition to pinoxaden, Eckelbarger teaches bromoxynil, isoproturon and metribuzin as suitable components in combination with the pyridine carboxylic herbicides ([0201]).
Based on the teachings of Eckelbarger and Satchivi, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included pinoxaden in the herbicidal composition of the claims of the ‘836 patent. The same pyridine carboxylic acid herbicide compound of the ‘836 patent is known for use in herbicidal compositions in combination with other herbicides such as pinoxaden, as taught by Eckelbarger. Alternatively, it would have been obvious to have substituted the bromoxynil, isoproturon or metribuzin of the ‘836 patent claims with pinoxaden as pinoxaden, bromoxynil, isoproturon and metribuzin are all known as suitable in combination with the pyridine carboxylic acids. Regarding instant claim 24, the combination of the ‘836 patent and Eckelbarger do not require active ingredients in addition to the pyridine carboxylic acid herbicide and pinoxaden and the substitution of pinoxaden would remove the other active component. It is known that such compositions may be formed as concentrates, as taught by Eckelbarger. Thus, one of ordinary skill would have a reasonable expectation of success in forming the composition as the same compounds are taught as suitable in herbicidal compositions by Eckelbarger. Regarding the ratio of the components, the application rates of the compounds of Formula (I) of Eckelbarger and the application rate of pinoxaden as taught by Satchivi render obvious the ratios of the instant claims. For instance, application of compounds of Formula (I) at 35 g/ha are known, as taught by Eckelbarger. Similarly, pinoxaden is known to be useful at application rates such as 7.5 and 15 g/ha. An application rate of 35 g/ha of a compound of Formula (I) and a rate of 7.5 g/ha pinoxaden results in a weight ratio of 35:7.5 (4.7:1), which renders obvious the ratio of the instant claims. Alternatively, it would be a matter of optimization through routine experimentation to determine the suitable ratio of the components as the compounds of formula (I), as taught by Eckelbarger, may be applied at various application rates depending on the compound applied and the weed that is to be treated and pinoxaden may also be applied to various weed species at different rates with variable effectiveness, as taught by Satchivi, thus indicating that the amount of each substance that is applied is a result effective variable which one of ordinary skill would recognize and could optimize.
Claims 1, 5, 17, 18, 22, 24, 25 and 73 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 10,448,638 in view of Eckelbarger et al. (US2014/0274695, published 18 September 2014) as evidenced by NIH (Pesticides) in view of Satchivi et al. (US 2009/0062121, published 05 Mar 2009).
The ‘638 patent claims a herbicidal composition comprising a pyridine carboxylic acid herbicide of
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and an ALS inhibitor. The pyridine carboxyl acid compounds of claims 1-3 and 18-20 render obvious the pyridine carboxylic acid compound of the instant claims. Claims 4-13 and 21-25 require specific ALS inhibitors such as florasulam, imazamethabenz, bispyribac, propoxycarbazone, thiencarbazon, iodosulfuron and mesosulfuron and ratios of the component with the pyridine carboxylic acid herbicide. Claim 14 recites an additional adjuvant. Claim 15 recites an additional pesticide. Claim 16 recites the pyridine carboxylic acid the ALS inhibitor as the only actives. Claim 17 recites the composition as an herbicidal concentrate.
The ‘638 patent does not recite the addition of an ACCase inhibitor such as pinoxaden in the and the weight ratios as recited. These deficiencies are made up for in the teachings of Eckelbarger and Satchivi.
The teachings of Eckelbarger and Satchivi are described supra.
In addition to pinoxaden, Eckelbarger teaches florasulam, imazamethabenz, bispyribac, propoxycarbazone, thiencarbazon, iodosulfuron and mesosulfuron as suitable components in combination with the pyridine carboxylic herbicides ([0201]).
Based on the teachings of Eckelbarger and Satchivi, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included pinoxaden in the herbicidal composition of the claims of the ‘638 patent. The same pyridine carboxylic acid herbicide compound of the ‘638 patent is known for use in herbicidal compositions in combination with other herbicides such as pinoxaden, as taught by Eckelbarger. Alternatively, it would have been obvious to have substituted the florasulam, imazamethabenz, bispyribac, propoxycarbazone, thiencarbazon, iodosulfuron and mesosulfuron of the ‘638 patent claims with pinoxaden as pinoxaden, florasulam, imazamethabenz, bispyribac, propoxycarbazone, thiencarbazon, iodosulfuron and mesosulfuron are all known as suitable in combination with the pyridine carboxylic acids. Regarding instant claim 24, the combination of the ‘638 patent and Eckelbarger do not require active ingredients in addition to the pyridine carboxylic acid herbicide and pinoxaden and the substitution of pinoxaden would remove the other active component. Regarding the ratio of the components in the instant claims, the application rates of the compounds of Formula (I) of Eckelbarger and the application rate of pinoxaden as taught by Satchivi render obvious the ratios of the instant claims. For instance, application of compounds of Formula (I) at 35 g/ha are known, as taught by Eckelbarger. Similarly, pinoxaden is known to be useful at application rates such as 7.5 and 15 g/ha. An application rate of 35 g/ha of a compound of Formula (I) and a rate of 7.5 g/ha pinoxaden results in a weight ratio of 35:7.5 (2.3:1), which renders obvious the ratio of the instant claims. Alternatively, it would be a matter of optimization through routine experimentation to determine the suitable ratio of the components as the compounds of formula (I), as taught by Eckelbarger, may be applied at various application rates depending on the compound applied and the weed that is to be treated and pinoxaden may also be applied to various weed species at different rates with variable effectiveness, as taught by Satchivi, thus indicating that the amount of each substance that is applied is a result effective variable which one of ordinary skill would recognize and could optimize.
Claims 1, 5, 17, 18, 22, 24, 25 and 73 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 9,521,847 in view of Eckelbarger et al. (US2014/0274695, published 18 September 2014) as evidenced by NIH (Pesticides) in view of Satchivi et al. (US 2009/0062121, published 05 Mar 2009).
The ‘847 patent claims an herbicidal composition comprising (a) a pyridine carboxylic acid herbicide of
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and (b) synthetic auxin herbicide or auxin transport inhibitors such as 2,4-D. The pyridine carboxyl acid compounds of claims 1-6 render obvious the pyridine carboxylic acid compound of the instant claims. Claims 7-10 recite specific ratios of the (a) and (b) components. Claims 11 and12 recite an additional adjuvant and safener. Claim 13 recites an additional pesticide. Claim 14 recites the pyridine carboxylic acid the synthetic auxin herbicide or auxin transport inhibitor as the only actives. Claim 15 recites the composition as an herbicidal concentrate.
The ‘847 patent does not recite the addition of an ACCase inhibitor such as pinoxaden in the and the weight ratios as recited. These deficiencies are made up for in the teachings of Eckelbarger and Satchivi.
The teachings of Eckelbarger and Satchivi are described supra.
In addition to pinoxaden, Eckelbarger teaches 2,4-D as a suitable component in combination with the pyridine carboxylic herbicides ([0201]).
Based on the teachings of Eckelbarger and Satchivi, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included pinoxaden in the herbicidal composition of the claims of the ‘847 patent. The same pyridine carboxylic acid herbicide compound of the ‘847 patent is known for use in herbicidal compositions in combination with other herbicides such as pinoxaden, as taught by Eckelbarger. Alternatively, it would have been obvious to have substituted the 2,4-D of the ‘847 patent claims with pinoxaden as pinoxaden, florasulam, imazamethabenz, bispyribac, propoxycarbazone, thiencarbazon, iodosulfuron and mesosulfuron are all known as suitable in combination with the pyridine carboxylic acids. Regarding instant claim 24, the combination of the ‘847 patent and Eckelbarger do not require active ingredients in addition to the pyridine carboxylic acid herbicide and pinoxaden and the substitution of pinoxaden would remove the other active component. Regarding the ratio of the components in the instant claims, the application rates of the compounds of Formula (I) of Eckelbarger and the application rate of pinoxaden as taught by Satchivi render obvious the ratios of the instant claims. For instance, application of compounds of Formula (I) at 35 g/ha are known, as taught by Eckelbarger. Similarly, pinoxaden is known to be useful at application rates such as 7.5 and 15 g/ha. An application rate of 35 g/ha of a compound of Formula (I) and a rate of 15 g/ha pinoxaden results in a weight ratio of 35:15 (2.3:1), which renders obvious the ratio of the instant claims. Alternatively, it would be a matter of optimization through routine experimentation to determine the suitable ratio of the components as the compounds of formula (I), as taught by Eckelbarger, may be applied at various application rates depending on the compound applied and the weed that is to be treated and pinoxaden may also be applied to various weed species at different rates with variable effectiveness, as taught by Satchivi, thus indicating that the amount of each substance that is applied is a result effective variable which one of ordinary skill would recognize and could optimize.
Response to Arguments
Applicant's arguments filed 21 Apr 2026 have been fully considered but they are not persuasive. The applicant argues that patents US10,455,836 and US10,448,638 have expired and thus the rejection is moot. The examiner does not agree that the expiration of the previous patent obviates the double patenting rejection. As the prior patents have expired due to lack of payment of fees, the applicant may issue a terminal disclaimer to overcome the rejections. The applicant further argues that the unexpected results presented are sufficient to overcome the case of obviousness. The examiner has addressed these arguments in the response to arguments section above and refers back to them in addressing the applicant’s arguments regarding the double patenting rejections. Overall, the results presented are insufficient to overcome the rejections.
Conclusion
No claims are allowed.
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/E.C.M./Examiner, Art Unit 1619
/ANNA R FALKOWITZ/Primary Examiner, Art Unit 1600
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